Section 13 of the Trade Marks Act (Chapter 385) is the general corrective power over the Register, and it belongs to the Court — the National Court under the section 1 definition.
Section 13(1) — the grounds of rectification
(a) making an entry wrongly omitted to be made; or
(b) deleting or amending an entry wrongly made or wrongly remaining; or
(c) inserting a condition or limitation that ought to be inserted; or
(d) correcting an error or defect.
| Head | Typical case |
|---|---|
| (a) Entry wrongly omitted | An assignment or transmission the Registrar declined to register; a registered user entry wrongly refused |
| (b) Wrongly made or wrongly remaining | A mark registered contrary to section 19 or section 24; registered by someone who was not the proprietor; obtained by fraud; a word that has become generic under section 47(3) |
| (c) Condition or limitation that ought to be inserted | A disclaimer under section 23; a geographic or mode-of-use limitation reflecting concurrent rights |
| (d) Error or defect | A misdescribed proprietor, a mis-transcribed specification, a wrong class or date |
Head (b) covers two distinct situations: an entry that was wrong when made, and one that was right then but is wrong now. The second is what catches a mark that has ceased to be distinctive, and it is the mechanism expressly invoked by section 47(3), which deems a wholly generic registration to be an entry wrongly remaining in the Register for the purposes of section 13.
Section 13(2) — breach of a condition or limitation
On the application of the Registrar or of a person aggrieved, the Court may make such order as it thinks fit for the purpose of cancelling or varying a registration on the ground of failure to observe, or contravention of, a condition or limitation entered in the Register.
This is the sanction behind every condition imposed under section 33(1), in an opposition under section 40(6)(b) or 41(3)(b), on a concurrent use registration under section 26(1), or on restoration under section 62(1). A proprietor who ignores a limitation risks not merely losing the benefit of it but the registration itself.
Section 13(3) — demotion to Part B
The power to order rectification includes power to order the removal of a registration from Part A to Part B of the Register.
A middle course between leaving a registration untouched and cancelling it. A challenger who can show the mark never satisfied section 15, but who cannot show it fails section 16, may seek demotion instead of removal.
A Part B registration loses the protection of sections 51 and 52 — the three-year limitation on registrability challenges and conclusive validity after ten years — and becomes subject to the section 53(2) defence, under which no relief is granted if the defendant proves his use is not likely to deceive or cause confusion.
Sections 13(4) to (6) — the Registrar in rectification proceedings
- Section 13(4) — the Registrar shall not apply to the Court under the section unless he considers the application is desirable in the public interest.
- Section 13(5) — notice of an application (other than one by the Registrar) shall be given to the Registrar, who may appear and be heard, and shall appear if so directed by the Court.
- Section 13(6) — an office copy of the order shall be served on the Registrar, who shall take such steps as are necessary to give effect to it.
Section 95 completes the picture: in all court proceedings under the Act the Registrar’s costs are in the court’s discretion, but the Registrar shall not be ordered to pay another party’s costs. Section 102 adds that an order made on appeal cannot be enforced until an office copy has been served on the Registrar.
Rectification, non-use and the registry powers compared
| Route | Who decides | Who may apply | What it achieves |
|---|---|---|---|
| s 11 | Registrar | The registered proprietor only | Corrections, name and address changes, cancellation, narrowing the goods, adding a disclaimer |
| s 12 | Registrar | The registered proprietor only | Altering the mark, not substantially affecting its identity |
| s 13 | The Court | The Registrar or a person aggrieved | Any of the four heads; cancellation or variation for breach of a condition; demotion to Part B |
| s 14 | The Court | A person aggrieved | Removal for the goods not used |
| s 40 | Registrar (or the Court on referral) | Any person, within three months of advertisement | Refusal, or registration on conditions — before registration |
The section 40 route needs no standing, is decided in the first instance by the Registrar, and stops the mark before it is registered. Section 13 requires a person aggrieved, proceeds in the National Court, and must overcome the section 50 presumption that the registration is valid unless the contrary is shown. Watching the advertisements is a great deal less expensive than litigating afterwards.
Bringing or defending a section 13 application
- Establish standing — you must be a person aggrieved: a trader blocked, threatened, or otherwise hindered by the entry.
- Identify the head precisely, and the facts supporting it.
- Check the timing. A Part A registration more than three years old cannot be attacked on section 15 registrability unless it is not distinctive now (s 51); after ten years, only fraud, section 19 and present non-distinctiveness remain (s 52).
- Give notice to the Registrar as section 13(5) requires.
- Consider asking for less than cancellation — a limitation under head (c), a disclaimer, or demotion under section 13(3). Partial relief is often achievable where cancellation is not.
- If defending and you succeed, ask the Court for a certificate under section 89 that validity came in question — it entitles you to solicitor-and-client costs in any later validity dispute.
Sources
- Trade Marks Act (Chapter 385) — ss 1, 11–16, 19, 23, 24, 26, 33, 40, 41, 47, 50–53, 62, 89, 95, 102
Before relying on anything here, read the current text of the Trade Marks Act (Chapter 385) and check for later amendments. If a decision matters to you, get advice — start with the Office of the Public Solicitor, or find a firm in the law firms directory.